Sunday, September 20, 2020

The notorious RBG, Bill Clinton, and the Civil War

Former President Bill Clinton was interviewed by MARGARET BRENNAN on "Face the Nation" on 20 September 2020; the transcript of the interview included the following: MARGARET BRENNAN: You know, as you mentioned, it's getting pretty politically heated. If a Democrat were in the White House and the Democrats had control of the Senate, wouldn't they insist on a vote on a nomination while in control? PRESIDENT BILL CLINTON: I don't know. There is a difference between what happened with Judge Garland. That is with Judge Garland, you're talking about missing probably one and a half full terms of court. It was almost a year, but there is a tradition of the president foregoing an appointment when you're closer to the election. Abraham Lincoln faced this very thing in early October, Justice Roger Taney died. And he couldn't know for sure whether he was going to win re-election because we didn't have all the tools we have now to determine such things, and even then we don't know. So he knowingly waited until after the election to appoint, as former Treasury Secretary Salmon Chase to the Supreme Court. He thought the people deserve to have a say. Now, that's what Senator McConnell said they deserved back in 10 months before the presidential election of 2016. So it didn't take that long to change their tune. But that is their tune. They're for whatever maximizes their power, and I think that in this case, we should ask. Senator Graham and Senator Grassley, who said they wouldn't vote no matter what the party the president was- [Clinton cut off by Brennan at this point] A timeline of events is useful. June 30, 1864. Lincoln accepts Salmon Chase's resignation of June 29, 1864 [Your resignation of the office of Secretary of the Treasury, sent me yesterday, is accepted. Of all I have said in commendation of your ability and fidelity, I have nothing to unsay; and yet you and I have reached a point of mutual embarrassment in our official relation which it seems can not be overcome, or longer sustained, consistently with the public service. Your Obt. Servt. A. LINCOLN ] August 23, 1864. Lincoln's blind letter to cabinet members [ President Lincoln writes to his Cabinet members in August of 1864 that he does not believe he will be reelected. Lincoln continues, "it will be my duty to so cooperate with the Government [Government crossed out] President-elect, as to save the Union between the election and the inauguration; as he will have secured his election on such ground that he cannot possibly save it afterwards." ] September 4, 1864. Sherman's Special Field Order #64 [Wikipedia: General Sherman announced to his troops that "The army having accomplished its undertaking in the complete reduction and occupation of Atlanta will occupy the place and the country near it until a new campaign is planned in concert with the other grand armies of the United States ] October 12, 1864. Roger Taney died [ wikipedia: October 12, 1864 ] December 6, 1864. Salmon Chase nominated as Chief Justice December 6, 1864. Salmon Chase confirmed as Chief Justice link for Clinton transcript

Friday, September 11, 2020

CAFC says "assumptive attorney argument" is not enough

Garmin lost: Garmin International, Inc. and Garmin USA, Inc. (collectively, Garmin) appeal from two final written decisions of the Patent Trial and Appeal Board (the Board) upholding the patentability of certain claims of U.S. Patent No. 6,059,576 (the ’576 patent). Because substantial evidence supports the Board’s finding that Garmin failed to meet its burden of showing that the challenged claims are unpatentable under 35 U.S.C. § 103, we affirm "Assumptive" attorney argument is mentioned: Therefore, in the absence of an explicit disclosure, expert testimony on this point, and anything more than assumptive attorney argument, the Board’s findings on this issue are supported by substantial evidence. Put simply, a petitioner in an inter partes review has the burden of demonstrating unpatentability by a preponderance of the evidence; bare assertion through implication that a reference discloses a claim limitation, without more, is not enough to meet this burden

Thursday, September 10, 2020

Conflict issue in Snyders Heart

Snyders further argues that due to its own unique circumstances it is entitled to greater relief than that afforded to the appellant in Arthrex. Appellant’s Br. 16–18. In Snyders’ case, the Director of the United States Patent and Trademark Office (“USPTO”), Andre Iancu, served as counsel for the Appellee St. Jude Medical LLC (“St. Jude”) in a parallel proceeding prior to his appointment as Director. Director Iancu has therefore recused himself from this case. Snyders argues that the Director’s conflict should be imputed to all USPTO employees and that his recusal should impact the remedy available to Snyders. This argument is without merit. The USPTO’s Deputy Director has the authority to step into the shoes of Director in the event of the Director’s “incapacity.” 35 U.S.C. § 3(b)(1). A conflict requiring recusal qualifies as an “incapacity” within the meaning of the statute. Cf. In re Grand Jury Investigation, 916 F.3d 1047, 1055–56 (D.C. Cir. 2019) (discussing, under a similar statutory scheme, the Deputy Attorney General’s authority to oversee a case when the Attorney General is recused). The Deputy Director’s role sufficiently removes any potential taint of the Director’s conflict. We see no reason why, moreover, the Director’s lack of participation otherwise impacts the Arthrex remedy analysis. Accordingly, Snyders is entitled to the same relief given to the Arthrex appellant and no more. The decision of the Board is thus vacated and remanded for proceedings consistent with our decision in Arthrex.

IPR joinder provisions addressed by CAFC in Facebook case

The outcome on joinder: For the reasons explained below, we hold that the Board erred in its joinder decisions in allowing Facebook to join itself to a proceeding in which it was already a party, and also erred in allowing Facebook to add new claims to the IPRs through that joinder. Because joinder of the new claims was improper, we vacate the Board’s final written decisions as to those claims, but because we lack authority to review the Board’s institution of the two late-filed petitions, we remand to the Board to consider whether the termination of those proceedings finally resolves them. but also We also hold that the Board’s obviousness determinations on the originally instituted claims are supported by substantial evidence. We therefore affirm-in-part, vacatein-part, and remand the Board’s final written decisions on the ’245 and ’657 patents, affirm the Board’s final written decision on the ’552 patent, and affirm-in-part the Board’s final written decision on the ’356 patent. We dismiss as moot Facebook’s appeal of the Board’s final written decision on the ’356 patent with respect to claims 14 and 33.

Tuesday, September 01, 2020

Egenera prevails at CAFC on "judicial estoppel" question.

The CAFC finds no judicial estoppel: Prior to claim construction, and alongside an ongoing inter partes review (“IPR”) proceeding, Egenera separately petitioned the United States Patent and Trademark Office (“PTO”) to remove one of the eleven listed inventors from the ’430 patent. Following the district court’s claim construction and a trial on inventorship, Egenera asked the district court to add the removed inventor back to the patent. The district court determined that judicial estoppel prevented Egenera from relisting the inventor and held the ’430 patent invalid for failing to name all inventors. See Egenera, Inc. v. Cisco Sys., Inc., 379 F. Supp. 3d 110 (D. Mass. 2019) (“Invalidity Decision”); Egenera, Inc. v. Cisco Sys., Inc., 348 F. Supp. 3d 99 (D. Mass. 2019) (“Judicial Estoppel Decision”); Egenera, Inc. v. Cisco Sys., Inc., No. 16-11613, 2018 WL 717342 (D. Mass. Feb. 5, 2018) (“Claim Construction Decision”). Egenera appeals, challenging both the district court’s claim construction and the application of judicial estoppel. For the reasons described below, we affirm the district court’s claim construction but vacate the invalidity judgment based on judicial estoppel and remand for further proceedings. Of the issue: First, we address whether Egenera could correct inventorship, even absent judicial estoppel. The Constitution authorizes awarding patent exclusivity only to an inventor. U.S. CONST. art. I, § 8, cl. 8. And so courts have historically held that if a patent does not reflect its true inventorship, it is invalid. See Pannu v. Iolab Corp., 155 F.3d 1344, 1349–50 (Fed. Cir. 1998) (collecting cases). Inventorship is sometimes easy to determine. But sometimes it is complicated, as with complex projects involving many contributors at various times. Ultimately, inventorship is a legal conclusion premised on underlying factual findings, and one that depends on claim construction. In re VerHoef, 888 F.3d 1362, 1365 (Fed. Cir. 2018); Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292, 1302 (Fed. Cir. 2002). And like validity, inventorship is a claim-by-claim question. Trovan, 299 F.3d at 1302. Accordingly, who should be listed on the face of a patent may vary depending on what, exactly, is claimed and what, exactly, a court determines the claim scope to be. The Patent Act allows a listing of inventors to be corrected either upon petition to the Director, see 35 U.S.C. § 256(a), or upon court order, see § 256(b). Our precedent recognizes that a patent cannot be invalidated if inventorship can be corrected instead. Pannu, 155 F.3d at 1350. The statutory text recognizes this too: The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. 35 U.S.C. § 256(b) (emphases added). Section 256 applies if “through error a person is named . . . as the inventor, or through error an inventor is not named.” § 256(a). As previously noted, the inventorship question involved Egenera’s attempt to add back an inventor, Mr. Schulter, who had previously been removed alongside the IPR. The district court declared in a footnote that Mr. Schulter’s removal by petition was therefore “a considered act that is unlikely to qualify as an omission ‘through error.’” Judicial Estoppel Decision, 348 F. Supp. 3d at 102 n.1. Cisco agrees, arguing that Egenera’s petition was a “tactical ploy” rather than a “reasonable, but mistaken, effort to get inventorship right.” Appellee’s Br. 27–30 (arguing that “error” requires a “good-faith mistake”). We note that although the district court declined to credit Egenera’s witnesses’ accounts of conception, it also declined to find inequitable conduct on these facts, despite being urged by Cisco to do so. See Judicial Estoppel Decision, 348 F. Supp. 3d at 101; Invalidity Decision, 379 F. Supp. 3d at 129. Our precedent provides that “error” in § 256 includes “all varieties of mistakes—honest and dishonest”—rather than only unintentional inaccuracy. Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 1554–56 (Fed. Cir. 1997).3 That is, Stark expressly construed “error” to “embrace more than simply honest mistakes.” Id. at 1554. Stark’s broad interpretation was intended to “harmonize[] well with the title 35 policy of seeking to reward the actual inventors of technological advances.” Id. Indeed, § 256 is a savings provision, functioning to prevent invalidation when correction is available. It is the inequitable-conduct rules that provide a safety valve in the event of deceit. Id. at 1555–56. Cisco invites us to sidestep Stark because the AIA has since amended § 256. Previously, § 256 contained an additional requirement that the “error” of omitting an inventor occurred without “deceptive intention” on the inventor’s part. The scope of “error,” standing alone, was therefore broad enough to otherwise include acts amounting to “deceptive intention”—that is, intentional inaccuracy. See Stark, 119 F.3d at 1554. With the AIA, “without . . . deceptive intention” was struck from that section. See AIA, Pub. L. No. 112-29, § 20(f)(1)(B), 125 Stat. 284, 334 (2011). The essence of Cisco’s position is that when Congress removed this restrictive language that excluded intentional inaccuracy in certain cases, it somehow narrowed the meaning of “error” to exclude intentional inaccuracy entirely. Appellee’s Br. 30. Cisco argues that Congress’s removal of this language was meant to harmonize “error” with what Cisco views as its plain meaning—one that excludes intentional inaccuracy. We had not yet addressed the impact of the AIA on the holding of Stark. See, e.g., CODA Dev. S.R.O. v. Goodyear Tire & Rubber Co., 916 F.3d 1350, 1358 n.6 (Fed. Cir. 2019). But we now reject Cisco’s proposed interpretation because it is contrary to the text of § 256, the structure of the AIA,4 and the AIA’s legislative history.5 We hold that the AIA did not narrow the meaning of “error.” Accordingly, § 256 does not exclude “considered acts,” or even “deceptive intention,” from the meaning of “error.” Cf. Judicial Estoppel Decision, 348 F. Supp. 3d at 102 n.1. “Error” is simply the incorrect listing of inventors. Egenera asserted in its inventorship petition to the PTO, concurrent with the IPR, that Mr. Schulter was incorrectly listed as an inventor. At the time, no one had argued that “logic to modify” was a means-plus-function term. Indeed, it presumptively was not. And Egenera opposed such a construction when Cisco later advanced it; likewise, its position that Mr. Schulter was not an inventor was seemingly consistent with its preferred construction. But the court rejected Egenera’s construction in a way that also illuminated Mr. Schulter’s necessary presence as an inventor. After a three-day trial, and this appeal, the claim-construction and inventorship questions have at last been resolved. Because of these legal determinations, in retrospect, Egenera’s assertion in its inventorship petition was incorrect: Mr. Schulter was an inventor. According, we conclude that Mr. Schulter’s omission was “error.” Of judicial estoppel: Judicial estoppel is an equitable doctrine that prevents a litigant from taking a litigation position inconsistent with one successfully asserted in an earlier court proceeding. See id. “The purpose of the doctrine is to protect the integrity of the judicial process.” Id. Although the “contours of judicial estoppel are hazy,” and its application is case-dependent, the First Circuit applies the New Hampshire factors. RFF Family P’ship v. Ross, 814 F.3d 520, 527–28 (1st Cir. 2016) (Souter, J., sitting by designation). Accordingly, a court examines (1) whether a party’s earlier and later positions are “clearly inconsistent”—that is, “mutually exclusive”; (2) whether the party “succeeded in persuading a court to accept” the earlier position; and (3) whether the party would “derive an unfair advantage or impose an unfair detriment” on the other side if not estopped. New Hampshire v. Maine, 532 U.S. 742, 750–51 (2001). (...) To be “clearly inconsistent,” positions must be “mutually exclusive” and “directly inconsistent.” RFF, 814 F.3d at 528 (quoting Alt. Sys. Concepts, Inc. v. Synopsys, Inc., 374 F.3d 23, 33 (1st Cir. 2004)). In its § 256(a) petition, Egenera asked the PTO as a matter of formality “to delete Peter Schulter as an inventor of the invention being claimed.” J.A. 9367; see also 37 C.F.R. § 1.324; MPEP § 1481.02 (9th ed. Rev 10.2019, June 2020). Cisco argues that the “clearly inconsistent positions” were the two contrary uses of § 256.7 See Oral Arg. at 19:05–25, 26:29–38. Here, of course, in light of the district court’s claim construction and accompanying inventorship determination, Egenera is asking the district court to add Mr. Schulter back as an inventor. The district court concluded that “Egenera’s suggestion that Schulter may be relisted as an inventor as circumstances may dictate” was clearly inconsistent with its “September 2017 petition . . . that Schulter’s name was erroneously listed.” Judicial Estoppel Decision, 348 F. Supp. 3d at 102. This was incorrect. We do not think that multiple corrections under § 256 are per se “mutually exclusive.” In any event, the district court’s intervening claim-construction and inventorship determinations further justify any seeming inconsistency. Cf. Biomedical Pat. Mgmt. Corp. v. Cal. Dep’t of Health Servs., 505 F.3d 1328, 1341–42 (Fed. Cir. 2007) (noting that “inconsistency” in the judicial estoppel context “is excused by an intervening change in the law”); see generally 18B Wright & Miller, Federal Practice & Procedure § 4477.3 (2d ed., Apr. 2020 update). Inventorship, a complex legal conclusion, can depend on claim construction. Here, the underlying presumption was that Egenera’s claim terms, lacking “means,” were not means-plus-function. Egenera’s inventorship petition was consistent with that presumption. Indeed, it may well be that Mr. Schulter would not be an inventor under Egenera’s preferred construction; but inventorship under that claim construction was not decided. And Egenera consistently protested the means-plus-function construction both at the district court and on appeal—a construction that the inventorship question was directly predicated on. Therefore, once those issues were decided, it was entirely consistent for Egenera to request an accompanying formal correction of inventorship. Accordingly, at least due to the intervening claim construction, it was not “mutually exclusive,” as judicial estoppel requires, to again request formal correction of inventorship. The district court thus erred in discerning “clearly inconsistent” positions. AND This determination is narrow. We do not hold that judicial estoppel cannot apply to statements made during substantive prosecution, ex parte reexamination, or other quasi-adjudicatory proceedings—an issue not before us. And we do not go so far as to say that other theories of estoppel cannot apply to ministerial filings or representations before the PTO. But judicial estoppel cannot be stretched beyond persuading a tribunal, and it does not apply here. 3 Third, Egenera would gain no unfair advantage, and Cisco would suffer no unfair prejudice, if judicial estoppel were not applied. The focus of this inquiry is on whether not applying estoppel would result in unfair advantage or prejudice. See New Hampshire, 532 U.S. at 751 (“[Courts ask] whether the party seeking to assert an inconsistent position would derive an unfair advantage . . . if not estopped.”); RFF, 814 F.3d at 528.

Wednesday, August 26, 2020

CAFC does design patents in Sealy case

Sealy lost on obviousness grounds: Because we affirm the Board’s obviousness determination over the Aireloom Heritage reference, we decline to consider Sealy’s challenges to the other four references. We have considered Sealy’s remaining arguments and find them unpersuasive. For the foregoing reasons, we affirm the Board. The obviousness analysis for design patents requires that there be a prior art design that qualifies as a primary reference. Spigen, 955 F.3d at 1383, 1385. Whether a prior art design qualifies as a primary reference depends on whether the prior art reference “creates ‘basically the same’ visual impression as the claimed design.” Id. (cleaned up). The determination of whether a prior art design qualifies as a primary reference is a factual issue. Id. As to copying: Sealy’s “copying” argument during the reexamination proceeding was based mainly on the fact that Sealy’s mattress designs were on the market for over a year before Simmons introduced its alleged copycat products. See Appellant’s Br. 55–57 (citing J.A. 2370–72). The Board, in its decision on rehearing, stated that it “did not overlook evidence of copying,” but instead “agreed with the examiner’s general determination as to secondary considerations,” which included “acknowledging [Sealy’s] assertions as to copying.” Decision on Rehearing, 2019 WL 1489533, at *2. Indeed, the examiner’s general determination noted that Sealy presented argument regarding alleged “copying,” among other secondary considerations. J.A. 2498. The examiner then found Sealy’s secondary considerations to be unpersuasive and to not outweigh the strong evidence of obviousness presented in the Board’s new grounds of rejection. J.A. 2498–99 (“the strong evidence of obviousness presented in the new grounds of rejection by the Board outweighs the secondary considerations”); see also W. Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1373 (Fed. Cir. 2010) (“[W]eak secondary considerations generally do not overcome a strong prima facie case of obviousness.”). While a more comprehensive discussion of “copying” would be preferred, given the circumstances here—including the appropriate interpretation of “contrast,” the analysis and application of the prior art, and the examiner’s and Board’s more detailed discussion of other secondary considerations—we disagree that the comparatively limited discussion of “copying” alone constitutes a sufficient basis to disturb the Board’s overall determination of obviousness. See MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250, 1263–64 (Fed. Cir. 2012) (finding no error in a district court’s failing to explicitly mention secondary considerations “when the record establishes that the evidence was properly before and considered by the court”).

Saturday, August 22, 2020

CAFC mentions "obvious to try" in Kross case

We likewise reject Kross’s argument that the Board impermissibly employed an “obvious to try” rationale. Kross’s arguments in this regard focus on the Board’s statement that the “reasonable expectation of successfully solving a known problem using known properties of a known material i[s] generally prima facie obvious.” J.A. 6–7. We do not read into this statement the error that Kross complains of. This is not a case, as Kross contends, where “the prior art gave no indication of critical parameters and no direction as to which of many possibilities is likely to be successful.” Appellant’s Br. 24–25 (quoting In re Copaxone Consol. Cases, 906 F.3d 1013, 1025 (Fed. Cir. 2018)). As Kross himself contends, Taylor and Germain identified the parameters that would have been of concern to a skilled artisan (cracking, splitting). Chen teaches that non-gelatin, gel polymers would be beneficial in fixing these critical parameters (high dimensional stability, crack and tear resistance). That is a far cry from impermissibly requiring that a skilled artisan, without any guidance from the prior art, “vary all parameters” until one succeeds. Kubin, 561 F.3d at 1359.

Friday, August 21, 2020

"Security People" loses at the CAFC

The outcome: Security People, Inc., appeals the district court’s dismissal of its Administrative Procedure Act suit challenging the constitutionality of the cancellation of its patent in an inter partes review proceeding. Because Congress foreclosed the possibility of collateral APA review of inter partes review decisions by district courts, and because Security People cannot bring an APA challenge when the statutory scheme separately establishes an adequate remedy in a court for its constitutional challenge, we affirm the district court’s dismissal. The arguments The PTO responded to the complaint by moving to dismiss the suit on three grounds: (1) the district court lacked subject matter jurisdiction because Congress established a specific means for judicial review of IPR decisions, rendering collateral APA suits in district court inappropriate; (2) Security People failed to state a claim because it is barred from raising arguments it could have raised in an earlier proceeding; and (3) Security People failed to state a claim because precedent renders its claim meritless. The district court noted: The district court agreed with the PTO on the first ground, dismissing the suit for lack of subject matter jurisdiction. See Sec. People, Inc. v. Iancu, No. 18-cv-06180- HSG, slip op. at 4 (N.D. Cal. Jun. 10, 2019), ECF No. 28, (Decision). The court reasoned that because the America Invents Act (AIA)—codified in relevant part at 35 U.S.C. §§ 319, 141(c)—provides for “broad Federal Circuit review” of the Board’s final written decisions, see Decision at 3, but allows for review “only” in the Federal Circuit, see § 141(c), Congress discernibly intended to preclude district court review of Board decisions under the APA. The CAFC noted: More generally, we agree with the district court that the statutes providing for exclusive review of the Board’s final written decisions in this court preclude district courts from exercising APA jurisdiction over claims challenging the constitutionality of a final written decision. “[A] statutory scheme of administrative review followed by judicial review in a federal appellate court [can] preclude[] district court jurisdiction over a plaintiff’s statutory and constitutional claims” if “Congress’ intent to preclude district court jurisdiction [is] ‘fairly discernible in the statutory scheme.’” Elgin, 567 U.S. at 9–10 (quoting Thunder Basin, 510 U.S. at 207). “To determine whether it is ‘fairly discernible’ that Congress precluded district court jurisdiction over [Security People’s] claims, we examine the [statute’s] text, structure, and purpose.” Id. at 10.

Dr. Richard Sowinski loses at the CAFC under FRCP 41(b)

The issue: Dr. Sowinski argues that the merits of patent infringement were not adjudicated in Sowinski I, for the action was dismissed because he did not comply with the district court’s local rule for responding to a motion to dismiss. He argues that this was not a final judgment on the merits, because the dismissal was based on the technicality of a local deadline. He states that the imposition of res judicata on this basis is “manifestly unjust” because there was no trial of the question of infringement, and that if an infringement suit is now barred his patent is essentially invalidated because the CARB Cap-and-Trade Program is the only known infringing activity. BUT Federal Rule of Civil Procedure 41(b) provides that a dismissal for failure to prosecute “operates as an adjudication on the merits,” with exceptions not here applicable: 41(b) Involuntary Dismissal; Effect. If the plaintiff fails to prosecute or to comply with these rules or a court order, a defendant may move to dismiss the action or any claim against it. Unless the dismissal order states otherwise, a dismissal under this subdivision (b) and any dismissal not under this rule—except one for lack of jurisdiction, improper venue, or failure to join a party under Rule 19—operates as an adjudication on the merits. . . . The Federal Circuit has applied these principles. See, e.g., Nystrom v. Trex Co., 580 F.3d 1281, 1284-85 (Fed. Cir. 2009) (“In its simplest construct, [claim preclusion bars] the relitigation of a claim, or cause of action, or any possible defense to the cause of action which is ended by a judgment of the court.”); Senju, supra.

Covid moments in New Jersey

The entrance door says:
But on the inside:
Separately, on Monday, August 17, 2020, Ten Eyck Park in North Branch, NJ opened for the first time in about one month and a half. By Friday morning, August 21, 2020 it was closed again. Not clear what happened to close it again.